Ordonez v. Icon Sky Holdings LLC et al

Filing
33

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO. 10-60156-CIV-SEITZ/SIMONTON
ELIZABETH ORDONEZ,
Plaintiff,
vs.
ICON SKY HOLDINGS LLC, et aI.,
Defendants.
______________________________~I
ORDER GRANTING IN PART MOTION FOR FINAL DEFAULT JUDGMENT AND
CLOSING CASE
This cause is before the Court on Plaintiffs Motion for Final Judgment and Permanent
Injunction [DE-25] and Plaintiffs Renewed Motion for Final Default Judgment and Permanent
Injunction [DE-28], together with Plaintiffs Incorporated Memorandum of Law, and the April 8,
2010 Defaults entered by the Clerk of the Court of the United States District Court for the
Southern District of Florida against Defendants, Icon Sky Holdings LLC [DE-23] and Nisha
Elizabeth George [DE-16] (collectively the "Defendants"). As Defendants have failed to appear,
answer, or otherwise defend this action, I and given the documentary evidence submitted in
support of the motion, the Court shall grant in part Plaintiffs Renewed Motion for Final Default
Judgment.
IOn August 8, 2011, long after the entry of the April 8, 2010 Clerk's Defaults, Defendant Icon
Sky Holdings, LLC filed an Answer and Counterclaim [DE-31], which the Court struck because
it was not filed by an attorney. Neither Defendant has attempted to set aside the Clerk's
Defaults.
I.
FACTS ALLEGED IN THE COMPLAINT
On February 2,2010, Plaintiff Elizabeth Ordonez filed suit against Defendants Nisha
Elizabeth George ("George") and Icon Sky Holdings, LLC ("Icon Sky") for false designation of
origin and unfair competition under 15 U.S.C. § 1125(a), common law trademark infringement
and unfair competition under Florida Statutes §§ 2.01 and 495.161, tortious interference with a
contractual relationship, tortious interference with an advantageous business relationship, libel
per se, and deceptive and unfair trade practices in violation of Florida Statutes § 501.201, et. seq.
Plaintiff seeks declaratory judgment as to ownership of the Elizabeth Sky service mark and
trademarks and cancellation of Defendants' Elizabeth Sky service mark and trademark
applications in the United States Patent and Trademark Office ("USPTO") as well as damages.
After Defendants failed to appear, respond or otherwise defend, the Clerk of Court, pursuant to
Rule 55(a) of the Federal Rules of Civil Procedure, entered a default against both Defendants.
On January 20, 2011, Plaintiff filed and served this instant motion for entry of final default
judgment, to which Defendants have failed to respond. Accordingly, by defaulting, Defendants
"admit the plaintiffs well-pleaded allegations of fact" as set forth in the operative complaint.
Buchanan v. Bowman, 820 F.2d 359 (l1th Cir. 1987). By affidavit, Plaintiff has sworn that she
has personal knowledge of the facts contained in the Complaint and that all such facts, to the best
of her knowledge, are true and correct. As such, the well-pleaded factual allegations as set forth
in the Complaint are as follows:
A.
The Parties
Plaintiff is an established professional dancer, model, choreographer, actress, host and
recording artist. Compl.,,-r 15 [DE-I].
Ms. Ordonez is known by her fans, professionals and
2
celebrities in the entertainment industry as Elizabeth Sky. Id Defendant Icon Sky is a Texas
limited liability company formerly named Pure Icon Ltd. Co. Id at ~ 8. Icon Sky does business
under many fictitious and/or assumed names, including, but not limited to, Pure Icon Ltd. Co.,
Pure Icon International, Pure Icon Entertainment, and Pure Icon, Inc. Id at ~ 10. Defendant
George is the single managing member ofIcon Sky. Id at ~ 13. George used and continues to
use many aliases including but not limited to Nisha Behave, Elizabeth Behave, Liz Behave, Miss
Behave, Elizabeth Skye, and Elizabeth Sky. Id. at ~ 12. At all times material hereto, George
controlled Icon Sky to such an extent that she deprived the LLC of its independent existence. Id
at ~ 63. As such, George and Icon Sky are the alter egos of one another.
B.
Plaintiff's Usage of the Elizabeth Sky Mark
Ms. Ordonez assumed the stage name of Elizabeth Sky as early as June 30, 2006, and this
name became present in interstate commerce as early as September 1,2006. Id. at ~17. For
example, Plaintiff s talents via her Elizabeth Sky stage name have been showcased through
online portfolios containing pictures, video clips and sound recordings on social networking
websites, online talent databases and media websites, such as MySpace, ModelMayhem.com and
YouTube. Id. at ~ 18. Additionally, Plaintiffs association with entertainment services, audio
and audiovisual recordings, hat sales and similar goods and services is depicted on other social
networking sites such as Facebook and Twitter. Id. at ~ 19. Online entertainment industry
publications such as www.The30S.com and www.NoBodiesCrew.com also spotlight Plaintiff as
Elizabeth Sky on their websites. Id. at ~ 20. This online presence as Elizabeth Sky on these
websites aides Ms. Ordonez in the state of Florida as well as both nationally and internationally
in procuring audition opportunities and booking entertainment jobs as a model, singer, dancer,
3
actress, choreographer, performer and recording artist. Id at ~ 21. In addition to her work in the
entertainment industry, Plaintiff also designs and sells her own brand of hats called "Funktality
by Elizabeth Sky." Id at ~ 22. Each custom designed hat contains a tag affixed to the underside
of its brim which says "Funktality by Elizabeth Sky." Id These hats were present in interstate
commerce as early as December 25, 2006. Id
C.
Plaintiff's Ie 9 Trademark and Ie 41 Service Mark Application
On April 21, 2009, Plaintiff filed an application for an International Class ("IC") 9
trademark and IC 41 service mark for Elizabeth Sky in the United States Patent and Trademark
Office ("USPTO") Id
~
23. The Trademark Official Gazette published her Elizabeth Sky IC 9
and IC 41 mark on August 18,2009. Id at ~ 24. On December 16,2009, Icon Sky filed an
opposition to Plaintiffs application for the Elizabeth Sky IC 9 and 41 marks in the Trademark
Trial and Appeal Board ("TTAB"). Id at ~ 27. George signed Icon Sky's opposition using her
alias "Elizabeth Sky, Officer ofIcon Sky Holdings, LLC." Id at ~~ 28,29.
D.
Defendants' Ie 9 Trademark,
Applications
Ie 41 Service Mark and Ie 25 Trademark
On April 27, 2009, six days after Plaintiff filed her IC 9 and IC 41 application, George
filed an IC 41 application in the USPTO for an Elizabeth Sky service mark. She listed
"Elizabeth Sky" and "DBA Elizabeth Sky c/o Pure Icon Entertainment" as the initial
owner/applicant. Id. at ~~ 32,33. The USPTO assigned ownership of the Elizabeth Sky IC 41
service mark to Icon Sky on June 19,2009. Id at ~ 42.
Prior to Defendant George filing her IC 41 application, she was aware of Plaintiff s use of
the Elizabeth Sky mark in association with entertainment services, audio and audiovisual
4
recordings and other similar goods and services. [d. at
~
34. Additionally, Defendant George's
alleged use of the Elizabeth Sky IC 41 mark in association with audio and audiovisual
recordings, entertainment services, or similar goods or services, occurred if at all, after Plaintiffs
use of her Elizabeth Sky mark in interstate commerce and acquisition of common law rights in
the same. Id. at ~ 37. Contrary to George's allegations in her IC 41 application, she has not
used the Elizabeth Sky IC 41 service mark in this manner since as early as August 1991, nor has
her Elizabeth Sky IC 41 service mark been present in this manner in interstate commerce since as
early as January 1997. Id.
at,-r~
35,36.
On August 1,2009, George filed an IC 25 trademark application for Elizabeth Sky in the
USPTO, listing "Elizabeth Sky, DBA Elizabeth Sky" as the initial owner/applicant. Id. at
~~
64,
65. The Trademark Official Gazette published the application on December 29,2009. Id. at ~
71. The IC 25 class of goods and services encompasses the same types of goods and services that
Plaintiff uses in association with her Funktality by Elizabeth Sky hat line. Id. at,-r 66. Prior to
George filing her IC 25 application, she was aware of Plaintiffs use of the Elizabeth Sky
trademark in association with the hat line. Id. Defendant George also submitted specimens with
her IC 25 application consisting of pieces of paper with the words "Elizabeth Sky" printed on
them. These specimens appear to be tags as they are attached to a string; however, they are not
affixed to clothing. In fact, none of the specimens consist of actual, or pictures of actual,
clothing, hats or similar goods or services, other than what appears to be the belt loop of a pair of
pants. Id. at ~ 67.
Despite contrary allegations in her IC 25 application, Defendant George has not used
her Elizabeth Sky IC 25 trademark in association with clothing, hats or similar goods or services
5
since as early as January 1997, nor has she been using the Elizabeth Sky Ie 25 trademark in such
a manner since January 2003. Id. ,-r,-r 68,69. Instead, she did not begin using the Elizabeth Sky
trademark in association with any goods or services in Ie 25, if at all, until after Plaintiff began
using the Elizabeth Sky mark for clothing in interstate commerce and acquired common law
trademark rights in the same. Id. at,-r 70.
E. Defendants' Use afthe Elizabeth Sky Mark
At all material times prior to Plaintiff filing her Elizabeth Sky Ie 9 and 41 application, a
search of the words "Elizabeth Sky" on the USPTO Trademark Electronic Search System
("TESS") yielded no results for the term "Elizabeth Sky." Additionally, a search for Elizabeth
Sky on major search engines such as Yahoo and Google provided no evidence of Defendants'
alleged use of the Elizabeth Sky mark in interstate commerce.
After Plaintiff filed her Ie 9 and 41 application, she discovered multiple new websites
containing the words "Elizabeth Sky" in the URLS.2 Id. at,-r 45. These website were acquired
after Plaintiff filed her Ie 9 and 41 application, and are continually updated and owned and/or
controlled by George and/or Icon Sky. Id. at,-r,-r 46,47,48. During the same time period,
Plaintiff also discovered new web pages on online social networks using the name Elizabeth Sky
in association with entertainment services, audio and audiovisual recording, clothing or similar
goods or services on social networks. 3 Id. at,-r 49. These web pages were also acquired and/or
Specifically, www.elizabethsky.net (created on or about April 25, 2009);
www.elizabethsky.org (April 25, 2009); www.elizabeth-sky.com (created on or about
April 25, 2009); www.elizabethskytv.com (created on or about May 16, 2009); and
www.elizabethskyclothing.com (created on or about May 16, 2009).
3
www.myspace.comlelizabeth_sky, www.myspace.comlelizabethskytv,
www.twitter.comlelizabethsky. www.twitter.com/elizabeth_sky.
www.twitter.com/elizabethskytv, www.linkedin.comlinlelizabethskytv,
www.elizabethsky.bigcartel.com, www.dipdive.comlmember/elizabethsky,
6
created by George and/or Icon Sky. Id. at ~ 50, 51. Additionally, on or around the date that
George filed her Ie 41 service mark application, George and/or Icon Sky made updates to the
content and links on their ..www.pureicon.com .. website to reflect use of their Elizabeth Sky Ie
41 mark in association with entertainment services, audio and audiovisual recordings, clothing or
similar goods or services. 4 Id. at ~ 43.
Also, Defendant George previously owned trademark rights in an Ie 41 service mark
"Miss Behave" which she abandoned on October 28,2002. Id. at ~ 38. However, the artwork,
photographic images and text on some of the documents and a specimen that George submitted
to the USPTO as part of her Elizabeth Sky Ie 41 application is almost identical to the artwork,
photographic images and text on some of the documents and a specimen that George submitted
as part of her Miss Behave Ie 41 application. As to the specimen, aside from the bottom of it
which states "Pure Icon - Elizabeth Sky" as opposed to "Pure Icon - Miss Behave," the
specimens are virtually identical. Defendant used graphic editing software prior to submission of
the applications to add the words "Elizabeth Sky" to that specimen as well as other documents
that the term was not originally a part of in an effort to fraudulently demonstrate that she had
previously used the mark Elizabeth Sky in association with the services alleged in her
applications.
www.facebook.comlelizabethsky www.jamuse.comlviewprofile.aspx?userid=13614,
www.songkick.com/concerts/2433606-elizabeth-sky-at-pacha.
www.stylehive.com/personlelizabethsky, www.thedjlist.comldjs/elizabeth_sky, and
www.ustream.tv/elizabethsky.
Specifically, the www.pureicon.com website contained the following text: "For
2009 we will be unveiling a music based entertainment television show hosted by
producer and artist Elizabeth Sky aka the original Miss Behave." Id. at ~ 44.
7
F.
Defendants' Other Tortious Conduct Against Plaintiff
Defendants also directed a series of tortious acts against Plaintiff consisting of interfering
with Plaintiffs contractual relationships, interfering with Plaintiffs advantageous business
relationships, and libel. As to the first, Plaintiff previously established contractual relationships
with social networks such as MySpace, Facebook, ModelMayhem.com and Twitter by virtue of
these networks' policies which prompt new users to agree to the networks' "terms of use" before
creating an account and webpage. Id. at ~ 52. After Plaintiff filed her Ie 9 and 41 application,
George, individually or jointly and severally through Icon Sky, contacted these networks and
made trademark infringement complaints against Plaintiff. Id. at ~ 54. 5 These complaints
resulted in the cancellation or change of many of Plaintiffs website accounts using the name
Elizabeth Sky and thus interfered with her use of her Elizabeth Sky mark. Id. at ~ 55. Following
the complaints, George and/or Icon Sky acquired and now control the Twitter profile which
previously belonged to Plaintiff.6 Id. at ~ 56. Such acquisition led to confusion among Plaintiffs
fans and entertainment industry professionals who followed Plaintiffs Twitter profile. Id. at ~
57. Additionally, sometime after May 5, 2009, Plaintiffs electronic press kit (EPK) entitled
"Elizabeth Sky - EPK," which was posted on YouTube on October 12,2008 by one of her
colleagues, was removed and replaced with a message stating the video is no longer available due
to an alleged trademark claim by Defendants. Id. at ~ 58.
For example, a message was sent to Plaintiff by a ModelMayhem.com moderator
saying "Due to an issue with a trademark, we were forced to change the name on your
profile. I hope you like the name we chose, if not, feel free to change it but please do not
use Elizabeth Sky again." Id. at ~ 53.
See www.twitter.comlelizabethsky.
8
With regard to the second type of action, Defendants threatened national, international,
and Florida based7 third parties that have either worked with Plaintiff in the entertainment
industry or have spotlighted her as Elizabeth Sky. Id. at ~ 59. Such correspondence demanded
that these third parties remove any pictures or references to Plaintiff and threatened legal action
for failure to comply. Id.
As to the libel, Defendants posted warning messages containing false accusations about
Ms. Ordonez on online social networks and websites owned, controlled and/or created by George
and/or Icon Sky. The language used is identical or substantially similar to the following: (1) "A
female Hispanic from Greenacres, Florida named Elizabeth Ordonez is pretending to be
Elizabeth Sky, trying to steal her identity. We are in no way associated with the individual and
pursuing legal actions;" and (2) "The real ELIZABETH SKY. Advancing entertainment! A
Florida female named Elizabeth Ordonez is trying to steal my name/identity so watch out for
frauds!" Id. at ~ 60.
II.
LEGAL STANDARD
Federal Rule of Civil Procedure 55(b)(2) authorizes a court to enter a default judgment
against a properly served defendant, who, like Defendants here, failed to file a timely responsive
pleading. By such a default, all of Plaintiffs well-pled allegations in the Complaint are deemed
admitted. See Buchanan v. Bowman, 820 F.2d 359,361 (1Ith Cir. 1987); Petmed Express, Inc. v.
Medpots.com, 336 F. Supp. 2d 12 13, 121 7 (S.D. Fla. 2004). If the admitted facts in the
Complaint establish liability, then the Court must determine appropriate damages. Where all the
essential evidence is on record, an evidentiary hearing on damages is not required. See SEC v.
Specifically, Defendants sent emailsto the Florida based website "The305.com"
and the Florida limited liability company No Bodies Crew.
9
Smyth, 420 F.3d 1225,1232 n.13 (11th Cir. 2005) ("Rule 55(b)(2) speaks of evidentiary hearings
in a permissive tone ... We have held that no such hearing is required where all essential
evidence is already of record." (citations omitted)); see also Petmed Express, 336 F. Supp. 2d at
1223 (entering default judgment, permanent injunction and statutory damages in a Lanham Act
case without a hearing). In this case, a hearing on damages is unnecessary as Plaintiff has
submitted detailed declarations with accompanying documentary evidence in support of her
damages request.
III.
LIABILITY
A.
False Designation of Origin and Unfair Competition
Plaintiff requests injunctive relief with regard to Defendants' infringement of Plaintiffs
Elizabeth Sky mark in violation of § 1125(a) of the Lanham Act and Florida Statute § 495.161.
To prevail on a claim of false designation of origin and unfair competition under § 1125(a) of the
Lanham Act, a plaintiff must prove the following elements: (1) that she had a valid trademark
and (2) that the defendant had adopted an identical or similar mark such that consumers were
likely to confuse the two. See 15 U.S.C. § 1125(a); Lone Star Steakhouse & Saloon, Inc. v.
Longhorn Steaks, Inc., 106 F.3d 355, 360 (lIth Cir.1997). The plaintiffs use of the mark must
also predate the defendant's potentially confusing mark. See Tally-Ho, Inc. v. Coast Community
College Dist., 889 F.2d 1018, 1023 (lIth Cir. 1990). Willful infringement may be inferred from
a defendant's willingness to accept a default judgment. Arista Records, Inc. v. Beker Enters. 298
F. Supp. 2d 1310,1313 (S.D. Fla. 2003). Similarly, Florida statute 495.161 "explicitly preserves
common law rights in marks acquired in good faith," and the legal standards for federal unfair
competition under the Lanham Act and common law trademark infringement and unfair
10
competition are essentially the same. Tally-Ho, Inc., 889 F.2d at 1023, 1025-26. In order to
establish a claim in a Florida trademark infringement and unfair competition challenge, a
plaintiff must establish (l) the deceptive or fraudulent conduct of a competitor and (2) a
likelihood of consumer confusion. Third Party Verification, Inc. v. Signature link, Inc., 492 F.
Supp. 2d 1314, 1324 (M.D. Fla. 2007)
Considering the elements to establish a federal unfair competition claim under the
Lanham Act and to establish a common law trademark infringement and unfair competition
claim are essentially the same, they will be discussed as one. The unchallenged facts of
Plaintiffs Complaint support the elements for each claim. First, Plaintiffs use of the Elizabeth
Sky marks predate Defendants' use of the same marks and, thus, she has valid common law
service and trademark rights in Elizabeth Sky. Second, Defendant's requested IC 41 and IC 25
Elizabeth Sky marks are likely to confuse consumers because Defendants have used the marks,
which are the same as Plaintiff s marks, in association with entertainment services, audio and
audiovisual recordings and similar goods and services. Such areas are precisely those in which
Plaintiff uses her Elizabeth Sky mark. Additionally, with regard to the Florida claim,
Defendants' conduct was deceptive and fraudulent because Defendants' associations with the
aforementioned services as Elizabeth Sky were not in existence during the time periods alleged
in the application. Instead, the term Elizabeth Sky was merely added to previously established
websites and "photoshopped" to pictures and periodicals to demonstrate that the name had been
used in interstate commerce. Consequently, Plaintiff satisfies both the elements for a federal
violation of the Lanham Act and Florida trademark infringement and unfair competition laws and
has the right to enjoin Defendants' use of the Elizabeth Sky mark.
11
B.
Tortious Interference With Contractual Relationships and Advantageous Business
Relationships
Plaintiff requests injunctive relief as well as damages for Defendants' tortious
interference with both Plaintiffs contractual relationships as well as advantageous business
relationships. In order to establish a prima facie case for tortious interference with a contractual
relationship a plaintiff must establish the following four elements: (1) the existence of a
contractual relationship; (2) knowledge of the relationship on the part of the defendant; (3) an
intentional and unjustified interference with the relationship by the defendant; and, (4) damage to
the plaintiff as a result of the breach of the relationship. KMS Restaurant Corp. v. Wendy's Int'l,
Inc., 361 F.3d 1321, 1325 (11 th Cir. 2004). In order to establish a prima facia case for tortious
interference with an advantageous business relationship a plaintiff must establish four nearly
identical elements: (1) the existence of a contractual relationship; (2) knowledge of the
relationship on the part of the defendant; (3) an intentional and unjustified interference with the
relationship by the defendant; and, (4) damage to the plaintiff as a result of the breach of the
relationship. Gossard v. Adia Services, Inc., 723 So. 2d 182, 184 (Fla. 1998).
The well-pled facts set forth in the Complaint establish that Plaintiff has met each of
these elements with regards to both claims. As to the contractual relationship cause of action,
first, a contractual relationship existed between Plaintiff and third party social networks including
but not limited to Myspace, Facebook, Twitter and ModelMayhem.com by virtue of the network
policies which prompt new users to agree to the network's terms of use before creating an
account and webpage. Second, Defendants knew that Plaintiff had contractual relationships with
such third parties because it is general knowledge that in order to obtain an account with a social
12
network on the internet the user must agree to the site's terms of use. Third, Defendants
intentionally and unjustifiably interfered with the contractual relationships by misleading
Facebook, Twitter and ModelMayhem as to who is the rightful owner of the Elizabeth Sky mark.
Finally, Plaintiff has been injured as a direct and proximate result of Defendants' conduct
because the removal of Plaintiff s social network web pages deprived Plaintiff of work, as those
webpages were sources of leads for entertainment industry work and for the sale of her Funktality
by Elizabeth Sky hat line. As such, Plaintiff satisfied each of the four requisite elements and is
entitled to both injunctive relief and actual damages for Defendants' tortious interferences with
her contractual relationships.
With regard to the second cause of action, first, Plaintiff had advantageous business
relationships with third parties who are based in and/or doing business in Florida, including but
not limited to The305.com and No Bodies Crew, LLC. Second, due to Defendants' actions, as
described below in element three, it must be inferred that Defendants had knowledge of the
relationship between Plaintiff and The305.com and No Bodies Crew, LLC. Third, Defendants
intentionally and unjustifiably interfered with such relationships by: (1) falsely accusing Plaintiff
of infringing on their alleged rights to the Elizabeth Sky mark and through their demands that
these third parties take down any pictures of, or references to, Plaintiff and (2) threatening legal
action for failure to comply. Fourth, Plaintiff lost profits from Defendants' conduct because
many entertainment industry professionals stopped requesting Plaintiff for jobs, and Plaintiffs
business contacts discontinued showcasing Plaintiff on their websites for fear of being sued.
Accordingly, Plaintiff also satisfies each of these four elements and is entitled to both injunctive
13
relief and actual damages for Defendants' tortious interference with her advantageous business
relationships.
C.
Libel Per Se
Plaintiff requests that Defendants be enjoined from publishing malicious and false
statements about Plaintiff s alleged commission of identity theft and unlawful business
practices. 8 To recover for libel or slander under Florida law, a plaintiff must demonstrate that:
(1) the defendant published a false statement; (2) about the plaintiff; (3) to a third party; and (4)
the plaintiff suffered damages as a result of the publication. Thomas v. Orange Lake Country
Club, Inc., 224 F. Supp. 2d 1368, 1376 (M.D. Fla. 2002) (citing Valencia v. Citibank Int'l, 728
So.2d 330 (Fla. 3d DCA 1999)). However, in a libel per se action, special damages need not be
shown to sustain the action because malice is presented as a matter of law in such cases.
Johnson v. Finance Acecptance Co., 118 Fla. 397, 400-01 (Fla. 1935). A publication constitutes
libel per se under Florida law if, when considered alone without innuendo, it (a) charges that a
person has committed an infamous crime or (b) tends to injure one in his trade or profession. See
Richardv. Gray, 62 So. 2d 597,598 (Fla. 1953).
As set out above, Defendants published two statements which informed the viewers of
two third party webpages that a Ms. Ordonez of Greenacres, Florida was committing the
fraudulent crime of identity theft. Such publications are false because Plaintiff owns IC 9
trademark and IC 41 service mark rights in Elizabeth Sky. Furthermore, the publications injured
Plaintiff in her profession because as previously stated, she suffered lost business and career
8Plaintiff originally sought punitive damages for her libel per se claim. However, Plaintiffs
Renewed Motion for Final Judgment and Permanent Injunction does not contain the request for
punitive damages.
14
opportunities. Additionally, the publications posed a threat to Plaintiff's safety because the
statements revealed Plaintiff's real name and city of residence on the World Wide Web.
Accordingly, Plaintiff satisfies the elements for libel per se because Defendants' publications
were false, about the Plaintiff, published to a third party, and injured Plaintiff in her trade or
profession. Thus, Defendants are liable for libel per se, and Plaintiff is entitled to injunctive
relief.
D.
Deceptive and Unfair Trade Practices
Plaintiff requests that Defendants be enjoined from engaging in deceptive and unfair trade
practices under Florida Statute § 501.201 et seq. To be entitled to equitable relief under the
Florida Deceptive and Unfair Trade Practices Act (FDUTPA), a party must plead and prove that
the conduct complained of was unfair and deceptive and that he or she was aggrieved by such
acts. See Fla. Stat. § 501.201; Macias v. HBC of Florida, 694 So. 2d 88, 90 (Fla. 3d DCA 1997).
A deceptive act is an act that is likely to mislead consumers. Davis v. Powertel, Inc., 776 So. 2d
971,974 (Fla. 1st DCA 2000). The pleader need not plead any reliance on the part of the
consumer. Third Party Verification, Inc. v. Signaturelink, Inc., 429 F. Supp. 2d 1314, 1326
(M.D. Fla. 2007). An unfair practice is one that offends established public policy and that is
immoral, unethical, oppressive, unscrupulous, or substantially injurious to consumers. Samuels
v. King Motor Co. a/Fort Lauderdale, 782 So. 2d 489,499 (Fla. 4th DCA 2001).
Defendants' practices depicted in the Complaint were deceptive, unfair, and caused
Plaintiff to be aggrieved. First, Defendants' acts, consisting of transmitting and broadcasting
messages on social networking and entertainment websites falsely informing consumers that Ms.
Ordonez was stealing Defendants' identity and committing fraud and later hijacking Plaintiff's
15
profile and changing it to their own, are likely to mislead consumers as to the truthful identity of
Elizabeth Sky. Moreover, considering many of the third parties cancelled or changed Plaintiffs
accounts, it must be inferred that such third parties were misled by Defendants' complaints of
trademark infringement. Second, Defendants' aforementioned acts offend established public
policy and are unethical because they intentionally damaged Plaintiff s reputation through
publication of false representations concerning Plaintiff s alleged fraudulent acts. Additionally,
Defendants have achieved their ends by threatening third parties with legal action. Third, as
previously concluded, Plaintiff was aggrieved from Defendants' deceptive and unfair practices
because as a result of such acts she has lost profits and job requests and is no longer showcased
on the social networking and entertainment webpages. Accordingly, Plaintiff satisfies each of the
elements of a FDUTPA claim and is entitled to injunctive relief as a result of Defendants'
engagement in deceptive and unfair trade practices.
IV. INJUNCTIVE RELIEF
Plaintiff is entitled to the requested injunctive relief pursuant to 15 U.S.C. § 1116 and
common law. A plaintiff seeking a permanent injunction must demonstrate that (1) it has
suffered an irreparable injury; (2) remedies at law, such as monetary damages, are inadequate to
compensate for that injury; (3) considering the balance of hardship between plaintiff and
defendant, a remedy in equity is warranted; and (4) that the public interest would not be
disserved by a permanent injunction. See eBay, Inc. v. MercExchange, LLC, 547 U.S. 388, 390
(2006).
Here, the well-pled allegations and record evidence demonstrate that Plaintiff has
developed goodwill among the consuming public which would be undermined if Defendants are
16
not prohibited from further infringement of Plaintiffs marks. Defendants' continued use of
Plaintiffs marks will create irreparable harm and confusion, particularly because the Defendants
are using marks identical to Plaintiff s valid service and trademarks. Furthermore, Defendants
willfully infringed Plaintiffs marks and continued to do so even after service of the Complaint in
this matter. Such willful conduct demonstrates a likelihood that Defendants would continue to
harm Plaintiffs trademark and service mark if the Court declined to issue an injunction. Petmed
Express, 336 F. Supp. 2d at 1222-23 (entering permanent injunction under 15 U.S.C. § 1116 to
prevent further infringement of protected trademarks). Finally, the public would not be disserved
by the entry of a permanent injunction because the public has an interest in the proper
enforcement of valid service and trademarks.
V. RELIEF PURSUANT TO 15 U.S.C. § 1125(d)(1)(A)
Plaintiff also seeks relief under 15 U.S.c. § 1125(d)(1)(A), which prohibits cyberpiracy.
Specifically, Plaintiff seeks termination by the Registrar and the Internet Corporation for
Assigned Numbers (ICANN) of Defendants' capacity to access and use domain names which
contain the Elizabeth Sky mark, freezing of these domain names by the Registrar and ICANN,
and to have the Registrars reveal the owners, registrants, and administrative contacts and billing
information for said domain names. However, Plaintiffs complaint does not allege a cause of
action based on a violation of 15 U.S.C. § 1125(d)(I)(A). Thus, Plaintiff is not entitled to such
relief.
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VI. DAMAGES
Plaintiff s motion seeks monetary damages for Plaintiff s claims of tortious interference
with contract and tortious interference with an advantageous business relationship. The motion
does not seek damages for any of Defendants' Lanham Act violations. As set forth below,
Plaintiff is entitled to $81,000.00 in actual damages.
A.
Damages for Tortious Interference With Contract
Plaintiff seeks actual damages for Defendants' tortious interference with her existing
contracts with social networks, including MySpace, Facebook, Twitter, and ModelMayhem.com.
As a result of Defendants' actions, Plaintiff s web pages on these sites have been removed,
effectively wiping out Plaintiff s online presence. Plaintiff seeks the cost of rebuilding her web
pages which she calculates, based on her work creating the web pages before Defendants'
interference, as three years of ten hours per week at $50 per hour for a total amount of
$78,000.00. In support of this calculation, Plaintiff has filed the Affidavit of Orit Bodman,
C.P.A., who states that $50 an hour is a reasonable charge for a web designer, programmer or
marketer to charge. Ms. Bodman also states that this method of valuation is a reasonable method
that has been suggested by experts in the field as a method for valuing the cost or value of social
media. Accordingly, Plaintiff is entitled to $78,000 in damages for Defendants' tortious
interference with Plaintiff s contracts.
B.
Damages for Tortious Interference With an Advantageous Business Relationship
Plaintiff seeks $243,000 in damages for Defendants' tortious interference with her
advantageous business relationships. Plaintiff states that she lost $3000 in fees for performances
18
that her booking company refused to book for her because of Defendants' actions. Plaintiff also
seeks additional damages which are duplicative of the damages she seeks for her tortious
interference with contract claim. Plaintiff cannot recover these damages twice. Finally, Plaintiff
asserts that she is entitled to treble damages under the Lanham Act. While this may be true,
Plaintiff is only entitled to treble damages for claims under the Lanham Act. A claim for tortious
interference with an advantageous business relationship is a common law claim, which does not
entitle a plaintiff to treble damages. Accordingly, Plaintiff is entitled to $3000 in lost profits for
Defendants' tortious interference with Plaintiffs advantageous business relationships.
VII. DECLARATORY JUDGMENT
Plaintiff also seeks declaratory judgment pursuant to the Declaratory Judgment Act, 28
U.S.C. § 2201(a). Plaintiff seeks a declaration that she is the rightful owner of the Elizabeth Sky
service mark and trademarks under common law in IC 9, 41, and 25 and in similar classes of
goods and services and that Defendants' applications for trade and service marks were
fraudulent. Because Plaintiffs use of the marks in IC 9,41, and 25 predates Defendants' use of
the marks, Plaintiff is the owner of the Elizabeth Sky service and trademark under common law.
See Tana v. Dantanna's, 611 F.3d 767, 780 (lIth Cir. 2010).
VIII. COSTS
Plaintiff asks the Court to award her $1,434.15 in costs. Under the Lanham Act, Plaintiff
is entitled to recover her costs "subject to the principles of equity." 15 U.S.C. § 1117(a).
However, because § 1117(a) does not specify which costs are recoverable, the Court must follow
19
the limitations set out on 28 U.S.C. §§ 1821 and 1920. See Crawford Fitting Co. v. J.T.
Gibbons, Inc., 482 U.S. 437, 445 (1987). Under 28 U.S.C. § 1920, a court may tax costs for:
(1) Fees of the clerk and marshal;
(2) Fees for printed or electronically recorded transcripts necessarily obtained for use in
the case;
(3) Fees and disbursements for printing and witnesses;
(4) Fees for exemplification and the costs of making copies of any materials where the
copies are necessarily obtained for use in the case;
(5) Docket fees under § 1923 of this title;
(6) Compensation of court appointed experts, compensation of interpreters, and salaries,
fees, expenses, and costs of special interpretation services under § 1828 of this title.
Many of the costs sought by Plaintiff do not appear to fall into any of these categories and
Plaintiff has not provided the Court with any authority to support the imposition of some of these
costs or with enough details to determine whether the costs are reasonable. For example, the list
of costs submitted by Plaintiff does not indicate how many copies were made or the cost per page
that Plaintiff seeks. Consequently, the Court finds that Plaintiff is entitled to her costs but must
file a separate motion for costs setting out in more detail the costs incurred and the legal authority
for awarding such costs.
IX. ATTORNEYS' FEES
Plaintiff also seeks her attorneys' fees, which may be awarded under FDUTPA and under
the Lanham Act. However, under the Lanham Act, attorneys' fees are recoverable only in
"exceptional cases." 15 U.S.C. § 1117(a). The Eleventh Circuit has said that an exceptional case
is one where the infringing party acts in a malicious, fraudulent, deliberate, or willful manner.
20
Burger King Corp. v. Pilgrim's Pride Corp., 15 F.3d 166, 168 (11th Cir. 1994)( citing H.R. Rep.
No. 93-524, 93rd Cong., 1st Sess. (1974), reprinted in 1974 u.S.C.C.A.N. 7132, 7133). Based on
the facts set forth above, including Defendants interference with Plaintiffs business relationships
and contracts, the Court finds that Defendants' actions were willful and deliberate.
Consequently, Plaintiff is entitled to her attorneys fees under the Lanham Act. Plaintiff also
seeks her fees under FDUTPA, Florida Statute, section 501.2105. However, attorneys' fee
awards under FDUTPA are discretionary and Plaintiff has not set out why the Court should
award fees pursuant to FDUTPA. In Humane Society of Broward County, Inc. v. Florida
Humane Society, 951 So. 2d 966,971-72 (Fla. 4th DCA 2007), the court set out seven factors
that a court should consider in determining whether to exercise its discretion and award fees
under FDUTPA. Plaintiffs motion does not address any of these factors. Furthermore, having
awarded Plaintiff her fees pursuant to the Lanham Act, any fees awarded pursuant to FDUTPA
would be duplicative. Consequently, the Court declines to award Plaintiff attorneys' fees
pursuant to FDUTPA.
In support of her Motion, Plaintiff has submitted detailed time sheet entries and multiple
affidavits stating that attorneys' fees of $25,000 are reasonable under the circumstances. The
Court finds that the total of90.75 hours spent by Plaintiffs attorneys on this matter is reasonable
and that the billing rates of Elliot Zimmerman of$350 an hour and Charlotte Towne of$250 an
hour are reasonable. However, Plaintiff has failed to clearly set out how the total fee amount was
calculated. When the Court did its own calculations, it calculated that the fees were slightly
more than $25,000. However, since the affidavits only seek $25,000 that is what the Court will
award.
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Accordingly, it is
ORDERED that:
1) Plaintiffs Renewed Motion for Final Default Judgment and Permanent Injunction
[DE-28] is GRANTED IN PART as follows:
a) The Court will enter a separate final judgment awarding damages, in the
amount of$81,000, and attorneys' fees, in the amount of$25,000, and entering a permanent
injunction;
b) By September 12, 2011, Plaintiff shall file a separate motion for her taxable
costs, as permitted by statute.
2) All pending motions not otherwise ruled upon are DENIED as moot.
3) This case is CLOSED.
It..
DONE and ORDERED in Miami, Florida, this
So day of August, 2011.
UNITED STATES DISTRICT JUDGE
cc:
All Counsel of Record
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